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Japanese Utility Model Law
The information found or referenced herein is not intended to be legal advice or a substitute for obtaining legal advice from a licensed attorney.
Table of Contents
- I. Who may apply for a utility model registration
- II. Ownership rights
- III. Representation
- IV. Filing procedures
- V. Japanese Patent Office filing fees
- VI. Registration procedures
- VII. Rejection and amendment
- VIII. Technical Evaluation Report
- IX. Opposition
- X. Duration of utility model registration
- XI. Annual fees
- XII. Rights provided by a utility model registration
- XIII. Correction of specification or drawings after registration
- XIV. Licensing
- XV. Trial for invalidity
- XVI. Infringement
I. Who may apply for a utility model registration
A creator of a device or his assignee may apply for a utility model registration in Japan. In the event that an assignee is the applicant, the application must include the name and the domicile or residence of the device's creator, as well as the name of a person entitled to represent the assignee (if the assignee is a legal entity).
A person who has neither a domicile or residence in Japan may apply for and obtain a utility model registration if the country in which he has a domicile or residence grants reciprocal privileges to Japanese nationals, or if a treaty specifically grants such privileges.
In the absence of a contract stating otherwise, an employer may obtain the right to apply for, or take a non-exclusive license in, any utility model registration which issues for an device created by one of its employees. The nature of the device must fall within the scope of the business of the employer, and the act or acts which resulted in the creation of the device must have been within the present or past duties of the employee. The term "employee" also extends to officers of legal entities (such as corporations), as well as to public servants.
If the employer and employee have entered into a contract which grants the employer the utility model rights to the employee's device or an exclusive license therein, the employee is entitled to reasonable compensation. A reasonable amount of compensation is calculated on the basis of any profit that the employer will generate from the device, as well as the extent to which the employer has contributed to the making of the device.
However, if the nature of the device does not fall within the scope of the business of the employer, or the act or acts which resulted in the device were not within the present or past duties of the employee, the employer is forbidden from enforcing any contractual provision which grants the utility model rights to the employer or gives the employer an exclusive license therein.
An applicant who has his domicile or residence in Japan may represent himself before the Patent Office, or may be represented by a patent attorney ("benrishi"). However, applicants who do not have a domicile or residence in Japan must be represented by a patent attorney who has his domicile or residence in Japan.
The domicile or residence of the patent attorney representing a utility model applicant who does not have a domicile or residence in Japan will be considered when determining the proper venue for litigation.
The Japanese Patent Office has had a fully operational electronic filing system in place since 1990, and most utility model applications are now filed in this manner. The Patent Office allows the applications to be filed either on floppy disk, or "on-line" via a computer terminal connected to the Patent Office mainframe. Most patent attorneys in Japan now have these terminals in their offices. Besides application documents, most other documents filed during the utility model registration process may also be filed electronically.
The applicant may, of course, file a paper utility model application, but the Patent Office will transfer this type of application to a computer-readable format and charge the applicant an additional fee for this service.
V. Japanese Patent Office filing fees
Filing completed utility model application, or entering into the national phase of an international application: 14,000 yen
Note also that the first three years of annuity fees must be paid at the time the application is filed. This is currently 22,800 yen, plus 2,700 yen per claim.
Under amendments made to the Utility Model Law in 1994, utility model applications are no longer examined for novelty and inventive step. Instead, applications are simply reviewed at the time of filing to determine whether the following requirements are met.
The application for utility model registration must include the name and address of the creator(s) of the device, as well as the name and address of the applicant(s). If the applicant is represented by counsel, the application must include the name and address of any patent attorney representing the applicant(s). A power of attorney is also required, although it may be filed after the utility model application is filed. The applicant may request that a Technical Evaluation Report be prepared at this time (discussed below).
The contents of the application must include a specification, drawing(s), and an abstract. Unlike patent applications (which may be initially filed in English), a utility model application must be filed in Japanese.
B. Registerable subject matter
Under Article 3 of the Utility Model Law, a claimed device must relate to the shape or construction of articles or a combination of articles. Thus, chemical compositions, processes or methods cannot be registered as utility models, as well as those devices which do not possess industrial applicability. Other types of devices which are not registerable include those which contravene public order, morality or public health.
The specification must include the title of the device, a brief explanation of the drawing(s) present, a detailed explanation of the device, and at least one claim. Like patent applications, the detailed explanation of the device must describe the invention in a manner sufficiently clear and complete for the production and use of the device to be carried out by a person having ordinary skill in the art to which the device pertains.
The claims must state, on a claim by claim basis, all matters which an applicant considers necessary for defining the device for which a utility model registration is sought. In addition, the claims must be clear, concise, and supported by the detailed explanation of the device.
A utility model application may claim two or more devices. Article 6 of the Utility Model Law states that the application must consist of a device stated in one claim (referred to as "the specified device"), and one or more other devices which relate to the specified device in one or more of the following ways:
(1) devices in which the industrial applicability and the problem to be solved are the same as those of the specified device; or
(2) devices in which the industrial applicability and a substantial part of the features stated in the claim are the same as those of the specified device.
Should the utility model application claim two or more devices that fail to meet the above criteria for unity, the examiner will inform the applicant of such and require one device to be selected for registration. The applicant must file any divisional applications desired, or convert the utility model application into a patent or design application, within two months of the filing date of the application.
If the application is found to have fulfilled the formal requirements, the utility model will be registered. This process typically takes no more than six months, and is followed with the publication of: the name and residence of the owner, the number and date of the application, the name and residence of the creator, the title of the device, the drawings and a brief explanation of the same, the claims, the abstract, and the number and date of registration.
Should the utility model application not meet the above requirements, the Patent Office will issue an office action and request the applicant to make the necessary changes. If the applicant fails to comply with any of these requests within the stated time limit (typically 30 days), the application will be deemed to have been abandoned.
In addition, the applicant himself may amend the application, but only within two months of the application's filing date. Like patents, no new matter may be introduced into the application.
VIII. Technical Evaluation Report
As mentioned above, the applicant may request the Patent Office to prepare a Technical Evaluation Report for any claim at the time the utility model application is filed. After the utility model has been registered, third parties may also make this request at any time during the duration of the utility model registration.
The Technical Evaluation Report will be prepared by an examiner, and will consist only of the examiner's opinion regarding the validity of the claims for which review was requested. Registration will not be denied or revoked by the examiner during this review, regardless of the examiner's findings. In preparing the Technical Evaluation Report, the examiner will consider the following:
The examiner will conduct a search to determine whether the claimed device is described in a publication distributed anywhere prior to the filing date of the utility model application. If the claimed device were disclosed in one of these publications, the claimed device would be considered to be anticipated.
In addition, the claimed device would be considered to be anticipated by any patent or utility model applications which disclose the claimed device and are filed earlier, but published later, than the utility model registration under review.
However, the applicant may disclose the device in a printed publication or present a written description of the device to a scientific body designated by the Patent Office without loss of novelty, so long as the utility model application is filed within six months of the earliest of any of such dates. If a device was publicly disclosed or worked by a person not authorized by the applicant, the applicant would still be able to file a utility model application if done within six months of the earliest of such acts.
Like most other countries, Japan operates under the first-to-file rule. Thus, when two or more utility model applications are filed by different applicants and claim the same device, only the earliest filed application has the right to be registered.
When two or more utility model applications claiming the same device are filed by different applicants on the same day, then none of the applicants will receive a registration for the device.
When a device claimed in a utility model application is the same as an invention claimed in a patent application and the applications are filed on different dates, the applicant for a utility model registration may obtain registration only if this application was filed before the patent application.
When an invention claimed in a patent application is the same as a device claimed in a utility model application and the applications are filed on the same day, only one applicant may obtain the patent or the utility model registration. Thus, the parties are required to decide among themselves who will receive the patent or utility model registration. If no agreement is reached within a time limit set by the Director-General of the Patent Office, then the patent application will be rejected, and the utility model registration will be invalidated.
Priority may be claimed on a earlier filed Japanese patent or utility model application. However, the later application must be filed within one year of the earlier filed application. In addition, no internal priority may be claimed from (i) divisional applications; (ii) utility model applications which have been converted from patent applications; (iii) patent applications which have been converted from utility model applications; (iv) an earlier application which has been abandoned, withdrawn or invalidated at the time the later application is filed; (v) an earlier filed patent or utility model application which has been finally rejected; or (vi) a prior utility model application which has been allowed before the second utility model application is filed.
The earlier filed patent or utility model application upon which priority is claimed will be automatically withdrawn 15 months after its filing date. In addition, the applicant may not withdraw a priority claim on an earlier application after 15 months from the filing date of the earlier application.
b. Claiming priority on applications filed abroad
Japan is a member of the Paris Convention and the World Trade Organization, and therefore an applicant in Japan may claim priority from a patent or utility model application filed in a country which is a member of one or both of these organizations. Of course, the utility model application in Japan must be filed within one year of the earliest priority date claimed.
Article 3 (2) states that a utility model cannot be registered for a device when the device could have been easily made, prior to the filing date of the utility model application, by a person with ordinary skill in the art to which the device pertains.
There is no opportunity for third parties to oppose registration of utility models filed on or after January 1, 1994. The only ways in which third parties may contest the registerability of these utility models is to request the Patent Office to (a) conduct a trial for invalidity (discussed below), or (b) prepare a Technical Evaluation Report. It is still possible to file an opposition against utility model applications filed before January 1, 1994.
X. Duration of utility model registration
For utility models registered on an application filed on or after January 1, 1994, the duration is six years from the filing date of the application. For utility models registered on an application filed before January 1, 1994, the duration is 10 years from the date the application was published for opposition. However, the duration cannot exceed 15 years from the application date.
The payment of annual fees is required in order to maintain the utility model registration in force. As mentioned above, for utility model applications file on or after January 1, 1994 the first payment is due upon filing and must include the first three years of the annual fees due. The remaining annual payments for the fourth, fifth and sixth years are due on or before the anniversary of the filing date, and are 15,100 yen per year plus 1,800 yen per claim.
For utility model applications filed between January 1, 1988 and December 31, 1993, the annual fees are as follows:
1st to 3rd year (to be paid in lump sum): 25,500 yen plus 3,000 yen per claim
4th to 6th year (annually): 16,900 yen plus 2,000 yen per claim
7th to 10th year (annually): 33,800 yen plus 4,000 yen per claim
For utility model applications filed before January 1, 1988, the annual fees are as follows:
1st to 3rd year (to be paid in lump sum): 28,500 yen
4th to 6th year (annually): 18,900 yen
7th to 10th year (annually): 37,800 yen
If the annual fees are not paid by the above due dates, a six month grace period is provided when the payment is accompanied by a 100% penalty fee.
XII. Rights provided by a utility model registration
The owner of a utility model has the exclusive right to commercially work the registered utility model, where "working" is defined as manufacturing, using, selling, leasing, or importing a device which has been registered as a utility model, or offering for sale or lease (including advertising for the purpose of selling or leasing) a device which has been registered as a utility model.
XIII. Correction of specification or drawings after registration
The specification or drawings in a utility model may be corrected after registration, but only if the correction has as its object the cancellation of at least one claim. A request for correction may be made at any time after registration, but if the utility model is currently the subject of a trial for invalidity, the requested correction will not be entered until the end of the trial.
The owner of a utility model registration may grant an exclusive or non-exclusive license to others. However, Japan's version of an exclusive license is somewhat different.
In Japan, an exclusive license grants an undivided interest to all or part of a utility model registration to an exclusive licensee. An exclusive license is an in rem property right, and not a personal property right. Thus it is possible for the owner of a utility model registration to grant exclusive licenses to more than one person, i.e., an exclusive license may be granted to one company to make and sell the device in western Japan, and to another company to make and sell the device in eastern Japan.
An exclusive license must also be registered with the Patent Office in order for it to be given effect. By registering the exclusive license, the licensor is prevented from granting a conflicting license to a third party, and the exclusive licensee is given the right to sue third parties for infringement. Note, however, that there is no duty on the part of the owner of the utility model registration to register an exclusive license with the Patent Office, so a requirement to register the exclusive license is often included in the licensing agreement.
An exclusive license may be transferred only together with the business in which it is worked, or only with the consent of the owner of the utility model registration. This does not include transfer by inheritance or other general succession. An exclusive licensee may not grant a non-exclusive license to another without express permission from the owner of the utility model registration.
A non-exclusive license does not give the licensee the right to sue infringers. Non-exclusive licenses also do not have to be registered to be given effect as such. However, like the exclusive license, registration of the non-exclusive license prevents the owner of the utility model registration from granting a conflicting license to third parties.
There are certain circumstances in which a non-exclusive license will be granted to others without the consent of the owner of the utility model registration. Like the compulsory licenses under the Patent Law, these are very rarely granted in Japan.
1. When the device was created by a employee ("shop right")
Unless otherwise specified by contract, an employer, legal entity, or a state or local public entity ("employer") is entitled to a non-exclusive license on a registered utility model created by one or more of their employees. The device in question must be within the scope of the business of the employer, and the acts which resulted in the creation of the device must have been part of the present or past duties of the employee.
2. When the device is being worked by others prior to the filing date of utility model application
A person who was using a device in Japan before the filing date of the utility model registration covering the same, or has made preparations for using the registered device, may be granted a non-exclusive license. The license will be limited to the device which is or will be produced.
3. When a patentee has their patent rights invalidated
The patentee, or a licensee of the patentee, may be entitled to a non-exclusive license in a utility model registration when their patent is invalidated. This can occur in the following circumstances:
a. when the patent has been invalidated because a device registered as a utility model and the patented invention are the same, and both were inadvertently granted to the same person; or
b. when the patent has been invalidated because a device registered as a utility model and the patented invention are the same, and the utility model application was filed by another person first.
A patentee who loses their patent rights due to the above-mentioned reasons will be entitled to a non-exclusive license on the utility model right if he or she was working or preparing to work the invention before a trial for invalidation was requested, and did not know that the patent right was invalid for the above-mentioned reasons. Exclusive licensees and non-exclusive licensees will be entitled to a non-exclusive license on the utility model right if the licensees had previously registered their rights with the Patent Office.
Anyone granted a non-exclusive license under the above-mentioned circumstances must pay a "reasonable remuneration" to the owner or exclusive licensee of the utility model right.
4. When the utility model is not being worked in Japan
When a registered utility model has not been "sufficiently and continuously" worked for three or more years in Japan, a person who wishes to work the utility model has the right to request a non-exclusive license from the owner of the utility model right or an exclusive licensee. However, such a request cannot be made until four years after the filing date of the utility model application. If the owner of the utility model right refuses to grant a license or no agreement can be reached between the parties, the person desiring to work the utility model may request the Director-General of the Patent Office to hold an arbitration to decide the matter.
After receiving a request for arbitration, the Director-General will first notify the owner of the utility model right or the exclusive licensee of the request, and give them the opportunity to submit a written reply within a designated time limit. After receiving the written briefs from the opposing parties, the Director-General will consider the matter together with the Industrial Property Council.
The Director-General must deny the grant of a non-exclusive license in the event that there is a "legitimate reason" for the failure of the owner of the utility model right to work the device. This has typically been interpreted to mean that the owner thereof could not obtain timely regulatory approval from the government to work the device. If the Director-General decides to grant a non-exclusive license, he or she must also decide the scope of the non-exclusive license, the consideration therefor, and the method and time of payment.
The person who has been granted a non-exclusive license may have it revoked by the Director-General if he or she fails to sufficiently work the device, or if the reasons for granting the non-exclusive license are no longer applicable.
5. When later-filed utility model registration utilizes an earlier-filed patent, utility model or design
When a later-filed utility model registration utilizes an earlier-filed patented invention, registered utility model or registered design (or a design similar thereto), the later utility model owner (or licensees) cannot commercially work the earlier invention, utility model or design if they are owned by another person.
However, a later utility model owner (or exclusive licensee) can request a non-exclusive license to work the earlier patent, registered utility model or registered design. Once the later utility model owner has made the request, the earlier patentee, utility model owner, or design right owner (or exclusive licensee) may also request a non-exclusive license from the later utility model owner. If no agreement can be reached by the parties, the Director-General can arbitrate the matter in a manner similar to that described above.
The Director-General cannot grant a non-exclusive license in this situation when the grant thereof would "unduly injure the interests" of either party. In addition, the Director-General cannot grant a non-exclusive license to an earlier patentee, utility model owner, or design right owner without also granting one to the later utility model owner.
6. When the grant of a non-exclusive license is "in the public interest"
A person who intends to work the device may request the utility model owner or the exclusive licensee to grant a non-exclusive license when the working of the device is "particularly necessary" in the public interest.
If no agreement can be reached between the parties, the person intending to work the device may request the Minister for International Trade and Industry to arbitrate the decision. The arbitration procedure is the same as that outlined above.
A third party who is or may be adversely affected by a utility model registration may demand a trial for the invalidation thereof under the following circumstances:
a. new matter was added to the utility model application by amendment;
b. a utility model registration was granted to an applicant that is a resident of a country which does not grant reciprocal privileges to Japanese residents;
c. the device does not have any industrial applicability;
d. the device does not relate to the shape or construction of articles or a combination of articles;
e. the device was publicly known in Japan prior to the filing date of the application;
f. the device was publicly worked in Japan prior to the filing date of the application;
g. the device was described in a publication distributed in Japan or elsewhere prior to the filing date of the application;
h. the device could have been easily made, prior to the filing date of the application, by a person with ordinary skill in the art to which the device pertains;
i. the applicant was not the first one to file a patent or utility model application for the device;
j. the device is liable to contravene public order, morality or public health;
k. the registration was granted contrary to the provisions of a treaty;
l. the specification does not describe the device in a manner sufficiently clear and complete for the device to be produced by a person having ordinary skill in the art to which the device pertains;
m. the allowed claims are not clear and concise;
n. the utility model registration has been granted on an application filed by a person who is not the creator and has not succeeded to the right to obtain a utility model registration for the device concerned; and
o. when the owner of the utility model right has become a resident of a country that does not grant reciprocal privileges to residents of Japan, or the utility model registration in question no longer complies with a treaty.
The trial for invalidity is conducted before a appellate body of three to five examiners. The request for trial can be made at any time during the duration of the utility model, and may in fact be requested after the utility model in question has expired.
A utility model is literally infringed when someone other than the utility model owner and any licensees commercially makes, uses, sells, offers to sell or imports the claimed device. Note however that if the above acts are private and noncommercial, there is no infringement. In addition, there is no infringement when the claimed device is used for the purposes of experiment or research, or when the claimed device is present on board vessels or aircraft merely passing through Japan.
Liability for contributory infringement may be found if commercially making, using, selling, offering to sell or importing an article to be used exclusively for the manufacture of a device covered by a registered utility model.
A utility model infringement suit may be filed in any District Court in Japan. However, the vast majority of infringement litigation occurs in either Tokyo or Osaka, primarily because the defendant is either residing or allegedly infringing there. Because of this, these courts have intellectual property divisions with judges who specialize in these types of suits. In addition, the Patent Office has seconded a number of personnel to these intellectual property divisions to assist judges with technical matters. The parties to the suit have the right to appeal the decision of the District Court to a regional High Court, and afterwards to the Supreme Court in Tokyo.
For utility model applications filed on or after January 1, 1994, the utility model owner must first obtain a Technical Evaluation Report (see above) in order to instigate a utility model infringement lawsuit. If the owner wishes to proceed after reviewing the examiner's opinion on the validity of the registered utility model, a written warning must be sent to the alleged infringer and a copy of the Technical Evaluation Report must be provided to them. If the alleged infringer refuses to cease their activity after being warned in this manner, the utility model owner may then file an infringement suit in a District Court. Note that neither a Technical Evaluation Report nor a warning letter is necessary for instituting infringement litigation for utility models filed before January 1, 1994, because under the old law these were examined before grant.
In either case, however, the utility model owner will be liable to indemnify any damages caused to an alleged infringer by taking infringement action if the utility model in question is later found to be invalid in a trial for invalidation.
Like patent infringement suits, utility model infringement suits in Japan are typically handled by two attorneys. This is due to the fact that patent attorneys (benrishi) in Japan are not licensed to appear before the courts. Thus, the patent attorney will typically team up with a general attorney (bengoshi), who is licensed to appear before the courts but who may not have a strong technological background or strong understanding of the utility model law.
Pre-trial discovery in Japan is quite difficult, and therefore rarely available. Article 105 of the Patent Law applies to utility model litigation, and allows a court to order a party to "produce documents necessary for the assessment of the damage caused by the infringement". However, Article 105 goes on to state that "this provision shall not apply when the person possessing the documents has a legitimate reason for refusing to produce them". This last provision has been broadly interpreted by the courts. For example, it is possible for a party from whom documents have been requested to simply state that the documents requested contain sensitive information (i.e., trade secrets) and thereby avoid the discovery order.
At trial, the jurisdiction of the court is limited to the question of whether the defendant has infringed the device covered by the utility model registration, and does not have the jurisdiction to find the utility model registration invalid. If the defendant believes that the utility model registration is invalid, a separate trial for invalidity must be held before an appellate board in the Patent Office.
It is quite rare for a plaintiff to be granted a preliminary injunction against the defendant, although technically possible. Thus, the remedies available to a utility model owner consist primarily of a permanent injunction and monetary damages.
In order to collect monetary damages from an infringer, the plaintiff bears the burden of proving either negligent or willful infringement of the utility model. However, the law presumes that any infringement found to have taken place was done negligently.
Assuming the defendant is liable for monetary damages, the amount is calculated on the basis of the profits made by the infringer from the device covered by the utility model. Alternatively, a plaintiff may collect a reasonable royalty from the defendant. As noted above, the lack of an effective discovery process often means that the plaintiff will find it difficult to prove the amount of profits made by the defendant.
The court does have the discretion to increase the damage award beyond profits made or a reasonable royalty in the event that the infringement is found to have been willful or grossly negligent. In addition, the court has the discretion to order the infringer to publicly apologize for harming the business reputation of the owner of the utility model registrations.
Although the law requires that products covered by utility model registrations be marked, there is no penalty for not doing so, and the failure to do so will not be considered by the court when calculating damages. The law also provides for criminal penalties in the event of willful infringement, but it is extremely rare for a court to prosecute a willful infringer under this provision.
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